INDUSTRIAL DESIGNS ACT

Arrangement of Sections

   Section

PART I
PRELIMINARY PROVISIONS

   1.   Short title

   2.   Interpretation

   3.   Act to bind Republic

PART II
ADMINISTRATION

   4.   Administration of Act

   5.   Seal of Agency

   6.   Registrar

   7.   Functions of Agency

   8.   Appointment of other staff

   9.   Non-warranty and non-liability

   10.   Register of Designs

   11.   Rectification of Register

   12.   Inspection of register and evidentiary proof

   13.   Regulations on registration processes and procedures

   14.   Intellectual Property Journal

PART III
SCOPE AND REQUIREMENTS FOR PROTECTION OF DESIGN

   15.   Protection of designs

   16.   Designs excluded from protection

   17.   Novelty

   18.   Individual character

   19.   Proprietorship of designs

   20.   Subsisting of copyright in artistic work

PART IV
APPLICATION FOR REGISTRATION OF DESIGN

   21.   Persons entitled to apply for registration of design

   22.   Application by joint creators

   23.   Filing of registration for design application

   24.   Disclosure of design before filing date

   25.   Contents of application

   26.   Filing date

   27.   First to file rule

   28.   Right of priority

   29.   Right of priority by exhibition of design

   30.   Application based on design of another person

   31.   Refusal of application in certain cases

   32.   Amendment of application for registration of design

   33.   Postdating of application

   34.   Correction of errors in documents

   35.   Withdrawal of application

   36.   Revocation of acceptance

   37.   Lapse of application

   38.   Filing of application by non resident

PART V
EXAMINATION, PUBLICATION AND OPPOSITION

   39.   Examination for compliance with requirements

   40.   Acceptance of application

   41.   Publication of acceptance

   42.   Inspection of application

   43.   Opposition to registration of design

   44.   Opposition procedure for registration

PART VI
DESIGNS BY EMPLOYEES

   45.   Design created by employee

   46.   Design created by Government employee

   47.   Disputes over design by employee

PART VII
INTERNATIONAL APPLICATIONS FOR REGISTRATION OF DESIGN

   48.   Role of Agency regarding international applications

   49.   Procedure relating to international application

   50.   ARIPO registration of design

PART VIII
REGISTRATION, TERM AND RENEWAL OF DESIGN

   51.   Registration of design

   52.   Date and term of registration

   53.   Publication of registration

   54.   Restoration of design on Register

   55.   Rights of proprietor of restored registration of design

PART IX
PROPRIETOR’S RIGHTS AND LIMITATIONS

   56.   Exclusive rights of proprietor

   57.   Nature of registered design right

   58.   Joint ownership of registered design

   59.   Limitations of registered design rights

PART X
INFRINGEMENT

   60.   Infringement

   61.   Non-infringement acts

   62.   Right to commence proceedings for Infringement

   63.   Remedies for infringement

   64.   Order for delivery up

   65.   Order for forfeiture, destruction and disposal

   66.   Restrictions on recovery of damages for innocent infringement

   67.   Declaration of non-infringement

   68.   Infringement proceedings where concurrent rights exist

   69.   Affidavit evidence

   70.   Groundless threat of infringement proceedings

PART XI
CANCELLATION OF REGISTRATION OF REGISTERED DESIGN

   71.   Application to cancel registration of registered design

   72.   Cancellation of registration by order of Court

   73.   Cancellation of registration of registered design in public interest

   74.   Effect of cancellation of registration

PART XII
PUBLICATION OR COMMUNICATION OF DESIGN RELATED TO DEFENCE AND SECURITY

   75.   Prohibiting publication or communication of information prejudicial to defence

   76.   Effects of directions on application

   77.   Penalty

PART XIII
CONTRACTUAL AND COMPULSORY LICENCES

   78.   Licence contract

   79.   Refusal by Registrar to register licence contract

   80.   Exclusive licence

   81.   Compulsory licence

   82.   Compulsory license granted under regulation

   83.   Revocation of compulsory license

   84.   Registration of compulsory licence

PART XIV
EXPLOITATION OF REGISTERED DESIGN BY GOVERNMENT

   85.   Use of registered design by Government

   86.   Notification of proprietor by Government

   87.   Extent, duration and limitation of use of registered design

   88.   Compensation of proprietor for use of registered design

PART XV
OFFENCES

   89.   Manufacture and possession of die for use in commission of offence

   90.   Holding out as patent agent

   91.   offences by body corporate or unincorporated body

   92.   General offence

   93.   General penalty

PART XVI
GENERAL PROVISIONS

   94.   Exercise of discretionary power

   95.   Registrar may sit with assessors in determining a matter

   96.   Evidence of certain entries and documents

   97.   Requests for information

   98.   Extension of time

   99.   Registrar to act as soon as practicable

   100.   Registrar to act in accordance with court

   101.   Authorisation to publish advertisement of notice

   102.   Replacement of certificate

   103.   Lodging and authentication of documents

   104.   Expenses relating to administration

   105.   Administrative penalties

   106.   Prescribed fee

   107.   Waiver of payment of prescribed fee

   108.   Regulations

   109.   Repeal

   110.   Transitional provisions

      SCHEDULE

AN ACT

to encourage the creation of designs and development of creative industries through enhanced protection and utilisation of designs; to provide for the registration and protection of designs; to provide for the rights of proprietors of registered designs; to provide for the restriction, publication and communication of registered designs; to provide for contractual and compulsory licences; to provide for the use and acquisition of registered designs by the Government; to give effect to the Paris Convention for the Protection of Industrial Property 1883, the Harare Protocol on Patents and Industrial Designs adopted on December 10, 1982, the World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Rights 1994 and any other relevant international treaty or Convention to which Zambia is a State Party; to repeal and replace the Registered Designs Act, 1958; and to provide for matters connected with, or incidental to, the foregoing.

[2nd June, 2017]

Act 22 of 2016,

SI 38 of 2017.

PART I
PRELIMINARY PROVISIONS

1.   Short title

This Act may be cited as the Industrial Designs Act.

2.   Interpretation

In this Act, unless the context otherwise requires—

“Agency”means the Patents and Companies Registration Agency established under the Patent and Companies Registration Act, 2010;

“applicant” means a person who applies for registration of a design and includes a person making any other formal application in accordance with this Act;

“ARIPO” means the African Regional Intellectual Property Organisation established by an agreement adopted at Lusaka on 9 December, 1976;

“article” includes any substance, material, equipment, machinery or apparatus whether affixed to land or not;

“artistic work” means work of any of the following descriptions:

   (a)   paintings, sculptures, drawings, engravings and photographs irrespective of artistic quality;

   (b)   works of architecture, being either buildings or models for buildings; or

   (c)   works of artistic craftsmanship not falling within paragraph (a) or (b);

“assessor” means a person who is an expert in Intellectual Property or any relevant field appointed by the Registrar;

“assignee” means a person who derives title to a design from a proprietor;

“authorised person” includes a contractor, subcontractor, firm or corporation who is authorised, in writing, to undertake an activity for noncommercial purposes for or on behalf of the Government;

“Board” means the Board of the Agency constituted in accordance with the Patents and Companies Registration Agency Act, 2010;

“child” has the meaning assigned to it in the Constitution;

“compulsory licence” means a licence granted by the Minister, in accordance with, and for the purposes stated in, section 81;

“convention application” means an application for the registration of a design from a convention country;

“convention country” means a country or an intergovernmental body which is party to the Paris Convention;

“corresponding design” in relation to an artistic work means a design which, when applied to an article, results in a reproduction of that work;

“court” in relation to any matter means the High Court;

“creator” means a person who actually creates the design and includes a person who made arrangements for the creation of a computer aided design, but does not include a person to whom a design has been communicated, from within or outside Zambia;

“date of lodging” means the date on which a document is lodged or deemed by virtue of any provision in this Act to have been lodged;

“design” means an industrial design taking the form of features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, whether in two dimensional or in three dimensional or in both forms, by any industrial process or means, which in the finished article appeal to, and are judged solely by the eye, and are not related to functionality; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device;

“designated office”means the national designs office designated by an applicant for a conventional registration of a design;

“elected office” means the national designs office elected by an applicant for the registration of a conventional application;

“exclusive licence” means a licence, in writing, signed by or on behalf of a proprietor, authorising the licensee, to the exclusion of all other persons, including the person granting the licence, to exercise a right that would otherwise be exercisable exclusively by the proprietor, and “exclusive licensee”, “exclusive assignee” and “exclusive assignment” shall be construed accordingly, with the necessary modifications;

“filing date” means the date of receipt of an application which complies with the requirements of this Act;

“Harare Protocol” means the Protocol for the Protection of Patents, Utility Models and Industrial Designs administered by ARIPO;

“legal representative” means a—

   (a)   liquidator or receiver of a company;

   (b)   person appointed under a power of attorney;

   (c)   person recognised by law, representing a person who has died, become bankrupt or assigned their estate; or

   (d)   person recognised by law, representing a child, a person of unsound mind or a person with a legal disability;

“licensee” means a person who has been permitted by a proprietor of a design to exploit the protected design in accordance with the terms and conditions specified in a licence contract;

“novelty” means the newness of a design in terms of features or appearance;

“officer” means an employee of the Agency;

“Paris Convention” means the Convention for the Protection of Industrial Property signed at Paris on March 20, 1883;

“practitioner” has the same meaning assigned to it by the Legal Practitioners Act;

“product” means any industrial or handicraft item other than a computer program and includes packaging, getup, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product;

“proprietor” means a legal owner of a design which was not exploited anywhere else in the world before it was exploited in Zambia or in a conventional country and includes the creator of the design;

“Register” means the Register of Designs established and maintained in accordance with section 10;

“Registrar” means the person appointed as Registrar in accordance with the Patents and Companies Registration Agency Act, 2010;

“repealed Act” means the Registered Designs Act, 1958;

“release date” means the date on which the design was first made available to the public in Zambia or elsewhere with the consent of the proprietor or any predecessor in title; and

“WIPO” means the World Intellectual Property Organisation established on July 14, 1967.

3.   Act to bind Republic

This Act shall bind the Republic.

PART II
ADMINISTRATION

4.   Administration of Act

This Act shall be administered by the Agency.

5.   Seal of Agency

The seal of the Agency kept in terms of the Patents and Companies Registration Agency Act, 2010, shall be used for the purposes of this Act and the impression made for such purposes shall be judicially noticed.

6.   Registrar

   (1) The Registrar appointed in accordance with the Patents and Companies Registration Agency Act, 2010 shall, in addition to the Registrar’s other functions and powers specified in that Act and any other law, exercise the powers and perform the functions conferred on the Registrar in accordance with this Act.

   (2) The Board may delegate the functions and powers of the Agency, specified in this Act, to the Registrar when the Board considers it necessary for the better implementation of this Act.

7.   Functions of Agency

The functions of the Agency are to—

   (a)   receive and process applications for the registration of designs made by a person referred to in section 21;

   (b)   act as a designated or an elected industrial designs office for international applications;

   (c)   act as an elected office for purposes of an international preliminary examination; and

   (d)   perform any other functions as are necessary or incidental to the carrying out of its functions under this Act.

8.   Appointment of other staff

The Board shall appoint assistant registrars, such number of examiners and other officers as may be necessary for carrying out the provisions of this Act and who shall, subject to the control of the Registrar, have all the powers conferred by this Act on the Registrar.

9.   Non-warranty and non-liability

An examination, investigation or any act undertaken, in accordance with this Act, shall not warrant the validity of such examination, investigation or act and no liability shall be incurred by the Registrar, examiner or any other officer by reason of, or in connection with, any examination, investigation, act or other consequent proceeding.

10.   Register of designs

   (1) The Agency shall establish and maintain a Register of designs in which shall be entered—

   (a)   particulars of designs;

   (b)   licences, assignments or transmissions of designs;

   (c)   notices of matters which are required, in accordance with this Act to be entered in the Register; and

   (d)   such other matters affecting the validity or ownership of a design, as may be prescribed.

   (2) The Register may be established in non-electronic or electronic form or partly in electronic form.

   (3) Where the Register is kept wholly or partly in electronic form, reference in this Act to—

   (a)   an entry in the Register shall include reference to a record of particulars kept in electronic form;

   (b)   particulars being entered in the Register shall include references to the keeping of records in electronic form; and

   (c)   the rectification of the Register shall include references to the rectification of the record of particulars kept in electronic form.

11.   Rectification of Register

The Registrar shall, where a design has been registered in accordance with section 51 and entered into the Register as provided in section 10, rectify the Register, if the court so orders, at the instance of the Registrar or a proprietor.

12.   Inspection of register and evidentiary proof

   (1) Subject to this Act, the Register shall, on payment of the prescribed fee, be open for inspection by the public during prescribed hours.

   (2) The Register shall be prima facie evidence of any matters required or authorised, by or in accordance with this Act, to be entered in the Register.

   (3) A copy of any entry in the Register or an extract from the Register, certified by the Registrar, shall be admitted in evidence without further proof and without production of the original copy.

13.   Regulations on registration processes and procedures

   (1) The Minister may, by statutory instrument, make regulations for, or with respect to, any matter under this Part that is to be prescribed or necessary for carrying out or giving effect to the registration processes and procedures.

   (2) Without limiting the generality of sub-section (1), regulations made, in accordance with that sub-section, may be made on the following matters:

   (a)   the format of applications for the registration of a design;

   (b)   the payment of fees in respect of any matter or anything done or provided for under this Part;

   (c)   the procedure to be followed in connection with any application or request to the Registrar or any proceeding before the Registrar;

   (d)   the provision of copies of any documents registered in the Register and the certification of such copies;

   (e)   the making of searches to the Register, including the times when, and the manner in which, the searches may be made;

   (f)   the service of notices and other documents with respect to the Register; or

   (g)   any matter required to be provided for in relation to the Register.

14.   Intellectual Property Journal

   (1) The Registrar shall arrange for the periodic publication of an Intellectual Property Journal on registered designs in accordance with this Act and any matter which the Registrar may consider desirable relating to such matters.

   (2) The Registrar may sell copies of the Intellectual Property Journal at such price and in such manner as the Board may approve.

PART III
SCOPE AND REQUIREMENTS FOR PROTECTION OF DESIGN

15.   Protection of designs

A design shall be eligible for protection, by registration in accordance with this Part, if the design is new and has individual character as provided in accordance with this Act.

16.   Designs excluded from protection

Despite section 15, the following designs shall not be registered and shall be excluded from being protected—

   (a)   designs which are contrary to written laws or well established natural laws;

   (b)   designs which contravene or are inconsistent with public order, public morality, principles of humanity and environmental conservation; and

   (c)   designs which comprise a flag, emblem, armorial bearings, abbreviation, decoration, coat of arms or other official sign and hallmark of Zambia or any other convention country or intergovernmental organisation of which one or more convention countries are State parties, used without consent.

17.   Novelty

   (1) A design shall be considered new if no design, whose features differ only in immaterial details, has been made available to the public within Zambia or elsewhere before the release date.

   (2) A design shall be considered to be available to the public before the release date if it has been published, exhibited, or used in trade or otherwise disclosed before the release date.

18.   Individual character

A design shall be considered to have individual character if the overall impression it produces on an informed user differs from the overall impression produced on such a user by any earlier design, which has been made available to the public before the release date of such a design.

19.   Proprietorship of designs

Subject to the other provisions of this Act or a written agreement, the creator of a design shall be considered as the original proprietor of a design, except where—

   (a)   a design is created in pursuance of a commission for money or money’s worth, the person commissioning the design shall be treated as the original proprietor of the design;

   (b)   a design is created by an employee in the course of employee’s employment, the employer shall be considered as the original proprietor of the design;

   (c)   a design becomes vested in a person other than the original proprietor, either alone or jointly with the original proprietor, such person, alone or jointly with the original proprietor, as the case may be, shall be considered as the proprietor or joint proprietors; or

   (d)   a design is generated by computer in a manner which does not involve a human creator, the person who arranges the computer program for the creation of such design, shall be considered as the original proprietor.

20.   Subsisting of copyright in artistic work

Where copyright subsists in an artistic work and an application for the registration of a corresponding design is made by or with the consent of the owner of the copyright, the design shall, for the purpose of this Act, be treated as new despite the artistic work being previously made use of, unless the previous use—

   (a)   of the artistic work consisted of or included selling, hiring, or offering to sale or hire articles to which the design is different only in immaterial details; or

   (b)   was done by the owner of the artistic work or with the owner’s consent.

PART IV
APPLICATION FOR REGISTRATION OF DESIGN

21.   Persons entitled to apply for registration of design

An application for registration of a design, may be filed with the Agency, in a prescribed form and manner by any of the following—

   (a)   a person claiming to be a creator of the design;

   (b)   an assignee of the person claiming to be a creator;

   (c)   a legal representative of a creator of a design or assignee;

   (d)   two or more persons who claim to be the creators of the design, as specified in section 22; or

   (e)   a successor in title to a creator of a design or assignee.

22.   Application by joint creators

   (1) An application for the registration of a design may be filed by two or more creators who have jointly created a design.

   (2) An application, referred to in sub-section (1), shall be made notwithstanding that—

   (a)   the creators of the design did not physically work together when coming up with the design; or

   (b)   the creators of the design did not make equal contribution to the creation of the design.

23.   Filing of registration for design application

   (1) An application for the registration of a design shall be filed in accordance with section 21, accompanied by a prescribed fee.

   (2) Where one or more of the creators who jointly created a design, as provided in section 22, cannot be found or reached for purposes of filing, the Registrar may, on being satisfied, allow an application to be made with the inclusion of the name or names of the missing creator or creators.

   (3) The Registrar may, where a design is created jointly by two or more creators as specified in section 22, but one or more of the persons refuse to be included on the application for the registration of a design, on being satisfied of the proof of such refusal, allow the application to be filed without the name or names, as the case may be, of the creator or creators who have refused to be included.

24.   Disclosure of design before filing date

An application for the registration of a design, consisting of a design which has been disclosed before the filing date, shall not be refused registration by the Registrar or invalidated if the disclosure—

   (a)   occurred within six months preceding the date of filing of the application for registration;

   (b)   was due to the design having been obtained unlawfully or in breach of confidence by any person—

      (i)   from the creator of the design or any other person to whom the matter was made available in confidence or who obtained the design from the creator because the creator believed that the person was entitled to obtain it;

      (ii)   from any other person to whom the matter was made available in confidence by any person mentioned in subparagraph (i) or in this subparagraph or who obtained it from any person so mentioned because that person or the person from whom that person obtained the design believed that such person was entitled to obtain it;

   (c)   in the case of textile, was as a result of a confidential order for products bearing the design, made before the registration of a design and such disclosure was made without the consent of the creator of the design;

   (d)   was made by way of the creator communicating the design to a Government department, agency or an authorised person, to consider the merits of the design;

   (e)   was made due to, or in consequence of, the creator of a design displaying the design at an exhibition, recognised by the Agency, and the applicant states, on filing the application, that the creator has notified the Registrar, in the prescribe manner, that the design has been so displayed and files written evidence in support of such notification, within the prescribed period; or

   (f)   was made to the public for the purpose of providing the result of a research undertaken by a higher education institution, research institution or development institution, within six months preceding the date of lodging an application for the registration of the design.

25.   Contents of application

An application for the registration of a design shall contain—

   (a)   the name and residence of the creator of a design;

   (b)   the name and residence of the applicant;

   (c)   where the applicant has a representative, the name and address of the representative;

   (d)   where the applicant is a legal entity, the name and nature of the entity;

   (e)   a detailed description of a design; and

   (f)   any other requirements as may be prescribed.

26.   Filing date

   (1) An application for the registration of a design shall be assigned a filing date by the Registrar.

   (2) The Registrar shall assign, as the filing date of an application, the date on which the applicant has satisfied the requirements of this Act.

   (3) Where the Registrar finds that, on the face of it, the application for the registration of a design does not fully comply with the requirements of this Act, at the time of filing, the Registrar shall request the applicant to file the necessary correction, within a prescribed period, before the application is assigned a filing date.

   (4) Where the applicant complies with the request referred to in sub-section (3), the Registrar shall assign, as the filing date for the registration of a design, the date on which the correction is lodged.

   (5) Where the applicant fails to comply with the request referred to in sub-sections (3), within the prescribed period, the Registrar shall consider the application for the registration of a design not to have been filed and the design shall form part of the prior art.

27.   First to file rule

Where two or more persons, separately and independently, create the same design and each of them separately files an application for the registration of a design, the right to register such a design shall belong to the person whose application has the earliest filing date, or if priority is claimed, the earliest priority date.

28.   Right of priority

   (1) Subject to this Act, a person who has filed an application for the registration of a design in a convention country shall, in relation to the registration of the same design in Zambia, have a right of priority for a period not exceeding six months from the date of filing the conventional application.

   (2) A right of priority referred to in sub-section (1), shall be capable of being assigned or transmitted with the application or independent of the application.

   (3) An assignment or transmission or a right of priority referred to in sub-section (1), shall be in writing and if not so done shall have no legal effect.

   (4) Where a subsequent application for the registration of a design is filed in a convention country, following an earlier application, in respect of the same design, such subsequent application shall be considered to be the first application in that country in respect of that design if, at the time of filing the application—

   (a)   the previous application had been withdrawn, abandoned or refused without having been opened to public inspection;

   (b)   no priority rights have been claimed on the basis of the first application; and

   (c)   no rights are outstanding in that convention country in connection with an earlier application.

   (5) An application which has been withdrawn, abandoned or refused shall not, after the filing of a subsequent application relating to the same subject matter, be capable of supporting a claim for priority under this section, unless a right of priority is outstanding in Zambia or in any convention country in connection with the first application.

   (6) Where a person makes an application for the registration of a design and the application is—

   (a)   in accordance with the terms of a treaty subsisting between any two or more convention countries, equivalent to an application duly made in any one of those convention countries; or

   (b)   in accordance with the law of any convention country, equivalent to an application made in that convention country,

   (7) Where priority is not claimed within the period specified in sub-section (1), the right of priority shall lapse.

29.   Right of priority by exhibition of design

A design which has been displayed or used by the creator or with the creator’s consent, at an exhibition recognised by the Agency, before it is registered, shall have the right of priority for a period not exceeding six months from the date of such exhibition.

30.   Application based on design of another person

   (1) Where a person claims that the design, disclosed in the application for the registration of a design, is derived from a design for which the rights to such design belong to the person making the claim, the court may, on the application of such person, make an order, to the Registrar, to replace the name of the applicant with that of the person making such claim.

   (2) An action referred to in sub-section (1), shall be brought not later than three years from the time the person claiming to have the right to the design becomes aware of the filing of the application or the registration of the design.

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